GRADUAL | Decision 2778887
Date Published: Sep 22, 2017
OPPOSITION No B 2 778 887
Carl Zeiss Vision GmbH, Turnstr. 27, 73430 Aalen, Germany (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Qinglian Weng, East Gate No. 4 Ping Hai Village Ping Hai Zhen Xiuyu District, Putian, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).
On 14/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 778 887 is upheld for all the contested goods, namely:
Class 9: Anti-glare glasses; telescopes; spectacles [optics].
2. European Union trade mark application No 15 558 091 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 558 091 , namely against some of the goods in Class 9. The opposition is based on German trade mark registration No 398 534, ‘GRADAL’. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods
The goods on which the opposition is based are the following:
Class 9: Optical instruments and their parts.
The contested goods are the following:
Class 9: anti-glare glasses; telescopes; spectacles [optics].
The contested anti-glare glasses; telescopes; spectacles [optics] are included in the broad category of the opponent’s optical instruments and their parts. Therefore, they are identical.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price, because consumers tend to pay more attention to goods and the trade marks under which they are sold when the goods are specialised, expensive and/or not purchased on a day-to-day basis. As optical instruments are often rather expensive and intended for specific purposes, the degree of attention is likely to be higher than average.
- The signs
GRADAL | |
Earlier trade mark | Contested sign |
The relevant territory is Germany.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters.
The contested sign is a figurative mark depicted in a black, rather standard typeface.
The verbal element of the contested sign, ‘GRADUAL’, has the same meaning in German as in English, namely ‘of or pertaining to degree’ (‘den Grad’, ‘Rang betreffend’, information extracted from Duden Dictionary on 04/09/2017 at http://www.duden.de/rechtschreibung/gradual). However, this meaning may not be understood by the general public. The word ‘GRADUAL’ may be perceived as indicating that the lenses in optical instruments curve gradually or that certain types of glasses can offer a gradual transition from distance to near vision. However, making such a connection between the word ‘GRADUAL’ and the goods in question would require a further mental step, and therefore the element ‘GRADUAL’ is at most allusive in respect of the goods in question. The word ‘GRADAL’, on the other hand, would be perceived as meaningless.
Visually and aurally, the signs coincide in (the sound of) the letters ‘GRAD*AL’, so all the letters of the earlier sign are reproduced in the contested sign in the same sequence. However, the marks differ in (the sound of) the additional letter ‘U’ in the contested sign and in the number of syllables, two versus three. While the contested sign is a figurative mark, it is not sufficiently stylised to distinguish it from a word mark.
Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually and aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although a part of the public in the relevant territory will perceive the meaning of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the rest of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The signs are visually and aurally highly similar because six out of seven letters of the contested sign are the same as the letters constituting the entire earlier mark. For a part of the relevant public the signs are not conceptually similar and for the rest of the relevant public the conceptual aspect does not influence the assessment of similarity of the signs. The goods are identical.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Due to the identity between the goods, the high degree of visual and aural similarity between the signs and the absence of any dominant or non-distinctive elements in the signs, a likelihood of confusion exists. A difference of only one letter between the signs, which are not short, does not suffice to exclude the likelihood of confusion, even when the consumer’s degree of attention is high.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 398 534. It follows that the contested trade mark must be rejected for all the contested goods.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Janja FELC | Birgit Holst FILTENBORG | Ana MUÑIZ RORDIGUEZ |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.